Tuesday, 31 August 2010

Afro Leo notes that, following the introduction in Sudan of recent regulations on border measures, it is possible now to register trade marks in that country's customs department. This registration will serve as notice to all border customs, who must watch incoming shipments of goods suspected of bearing false or counterfeit products or similar or identical trade marks. Customs officials will confiscate any products alleged of being counterfeit and will inform the registered trade mark owner -- who must then take legal action within 10 days.

To benefit from these regulations the trade mark owner must comply with the following formalities:

a power of attorney should be provided, legalised up to the Sudanese consulate of the trade mark owner's country;

a certified copy of trade mark registration certificate in Sudan should also be provided, along with samples or photocopies of the original products.

Registration with customs is valid for one year but can be renewed annually.

Zambia has recently been the focus of anti-counterfeit measures undertaken by Samsung. This article explains how Samsung is tackling the problem using the Zambia Police Intellectual Property Unit following a raid at the Mama Afrika store in Kitwe. An editorial piece contained in the Times of Zambia appeals to the consumer to assist:

"The trade may look lucrative but it is only assisting in stifling innovation as local fledgling inventors cannot compete on an even playing field with goods that are brought in the country by traders who often evade tax. Ultimately, poverty and unemployment will increase as only a few hawkers and traders benefit from the trade. There is a more sinister side to this illicit business because by buying the product, you could be financing organised crime such as human trafficking or even terrorism."

The Intellectual Property Unit has been busy in recent times. In 2009 they were active against software pirates, dodgy music equipment and fake fruit drinks. PACRO (The Patents and Companies Registration Office) contains a well researched article here. Afro-IP reported on anti-counterfeiting initiatives in the country here, here and here.

Monday, 30 August 2010

The good news for owners of service marks is that the President has finally assented to the Trademarks Act 2010.

This is of great significance because Uganda has been the only country in the East African region that did not provide specific protection for service marks. This should give businesses operating in Uganda a greater sense of confidence. Secondly, as Uganda is second only to Rwanda in terms of being a liberal economy, this will encourage service related franchises. Thirdly, this is one step further in enhancing Uganda's business environment, as reviewed from time to time by entities such as the OECD, World Bank and private agencies such as the Economist.

It goes without saying that passing of this law and full implementation of this Trademarks Act will also reivigorate the fight against counterfeits in Uganda. The question that arises then is, if you have a trademark act that provides sufficient civil and criminal remedies, what purpose does the Anti counterfeit Bill serve? Comments are welcome.

It is always good to see an article on Africa in the Wall Street Journal. Alec van Gelder, who has commented on this blog before writes that:

"The drug companies do make easy targets but that doesn't make them villains. The life-saving treatments they create remain Africa's best hope. The misguided battle against pharmaceutical companies' patent rights will only make Africa's health crisis worse..."

Right - seized drugs (AFP)

The full article explains that lack of domestic infrastructure and misguided aid are the real villains (I was able to read article first time without the need to subscribe and hope you can too).

Afro Leo was in a conversation this month with a fork lift driver and building site manager from Durban who explained that every person on his 30 strong team was infected. "You would not notice the difference until they do not take their ARVs. Men capable of lifting bags of cement for an entire shift, die within months." I asked him why they would not take their ARVs and he explained that it was sometimes cost and sometimes supply. For further reading on the "patents v access" debate on this blog, type in "access to drugs" in the search block on Afro-IP.

Meanwhile late last week, Interpol, East Africa announced the seizure of 10 tonnes of counterfeit drugs. Yahoo news article here. The WHO, one of the targets of Alec's article, ironically gets part of the credit. The massive raid nicknamed Mamba III involved targets in Burundi, Kenya, Rwanda, Tanzania and Uganda. Given the recent debate over Kenya's definition of "counterfeit" (which included comment on the WHO's definition of the term) Afro Leo welcomes clarification on whether the confiscated drugs were fakes or actually generics that may fall within the definition of "counterfeit".

General

* Congratulations to Nevashni Pillay who got Friday's "Where in Africa?" correct! This Friday Afro Leo will continue his travels to IP hubs across Africa.

Friday, 27 August 2010

It's Friday, sub Saharan Africa is preparing for spring and Afro Leo has decided to take a break from it all. What better than a tropical paradise described in one leading travel information booklet as "so remote even an international fugitive could hide out here". Here are some clues:

It's nickname is "Cloud Coup Coup" - since independence in 1975 it has experienced over 20 coups

There are "three in one" and it is the third smallest African nation by area

It contains 10% of the population of London

You are bound to be fascinated by stories of Arab traders, Persian sultans, African slaves and Portuguese pirates whilst sipping tea on one of its many beaches

Alcohol is banned

If you are an IP owner, there is no local registry but you can publish a cautionary notice to ward off brand pirates and save your registration fees for local spices

It is a member of the PCT but there is no patent legislation currently in force

It is the only state to be a member of all of the following: African Union, Francophonie, Organisation of the Islamic Conference, Arab League and Indian Ocean Commission

Thursday, 26 August 2010

Thank you, Kyle Jensen, for tipping Afro Leo off about the news that the non-profit organisation for facilitating access to new technologies PIPRA is cooperating in the running of two IP Workshops in Cape Town, on 14 and 15 September.

Both events, which are funded by the United States Patent and Trademark Office, are free to attend. Kyle says they'll be "awesome". The first is a Workshop on IP Strategy for Small and Medium-Sized Enterprises (here); the second is a Workshop on IP and innovation in the South African public sector (here) -- at which there will be some debate and analysis of South Africa's new "Bayh Dole" Act (on which, see the earlier Afro-IP post here).

Tuesday, 24 August 2010

Discop Africa, which takes place 1-3 September 2010 at the Hilton Nairobi in Kenya, has announced their intention of launching the Africa Media Rights Watch initiative in early 2011. A number of leading broadcasters and content suppliers involved in sub-Saharan Africa have come together to form Africa Media Rights Watch. The initiative is supported by international key players such as Canal+ Overseas, M-Net and Cote Ouest as well as by African associations of broadcasters and content producers.

As an anti-piracy body standing against audiovisual piracy across that region, Africa Media Rights Watch’s objective is to help establish and promote a business environment that is respectful of copyright laws and of measures to enforce these laws. Participants believe the timing is right considering the speed at which the sub-Saharan African television marketplace has grown over the last two years.

Afro Leo welcomes this initiative which has received good press but wonders if sub-Saharan copyright laws and enforcement agencies are up to the challenge.

Monday, 23 August 2010

There has been much controversy over Cell C's (South Africa's third largest mobile operator) brand tinkering in South Africa. First was the contrived You Tube clip (controversy explained by Marklives here) and the second is the refusal of its re-worked logo by CIPRO.

Whilst public opinion is divided on the new ad campaign (I fall into the "well done! sector"), Cell C will not be able to escape the provisional refusal to register its new logo. CIPRO, on the other hand, are spot on and with refreshing efficiency too.

Cell C filed 70 applications - the first batch on 1 December last year and the second on 12 July 2010. All of the applications include the potentially fatal copyright symbol. The first batch of 43 have been provisionally refused meaning that CIPRO almost certainly raised an objection under Regulation 10 (in double quick time too - it must be said).

There is a way around the objection and perhaps a smart trade mark attorney will make the suggestion below? However, it is difficult to avoid the acknowledgement that Cell C's new trade mark is legally weak. Please let me know a judge that will allow anyone exclusivity to the copyright symbol or to the word "cell" for that matter for telecoms. The irony too is that logos are often protected by copyright but not so in this case.

So Cell C spend millions building a brand in a market which is dominated by two main players, where margins are low and the need to differentiate is crucial. Yet the marketing department hampers its own efforts by choosing a trade mark that will be costly and, at best, unpredictable to protect. On the positive side, I am delighted they did not choose the colour orange - which is about as muddy as its namesake river in the telecoms space (as explained by the link).

CBS Evening News carries a revealing story on the effect of the backlog of 700,000 patent applications awaiting examination at the US Patent and Trade Mark Office (USPTO) - "It represents innovations trapped in this agency that otherwise could be creating jobs" - at a time when the US and, let's face it, world economy needs it most.

CIPRO, the South African patent office, which registers around 12,000 patents and 30,000 trade marks per year year suffers its own backlogs. Although improvements have been reported recently, trade mark applications typically take several years to become registered. Patents, on the other hand, are granted relatively quickly in South Africa, primarily because substantive examination does not take place.

South Africa operates a deposit system for patents; patents are not examined for novelty, obviousness or utility. Consequently, the strength of patent rights are often only tested when the patent is relied on in an infringement case. This also means that a number of cases get embroiled in costly and time consuming pre-merit patent amendment squabbles. This latest patent case between Audiosport International (Pty) Ltd v Soundsure CC and the SA Rugby Union is an example of one of these pre merit squabbles, involving a dispute over a broadcast system.

During November 2008 Audiosport instituted an action for damages against the respondents based on their infringement prior to the expiration their patent. The respondents defended the action counterclaiming for the revocation of the patent on the grounds that it was invalid for lack of novelty or lack of an inventive step. The respondents relied on two prior art documents, US patent no 4, 097, 809 and US patent no 2, 710, 345. The case deals not with the merits of the counterclaim or the infringement but about whether Audiosport could amend their expired patent to more clearly avoid the prior art and lengthy arguments about invalidity at the main hearing. The respondents opposed the amendment on the basis that it was not possible to amend an expired patent.

The Judge concluded that after the term of a patent has expired a patent does not cease to have legal force and effect (he held that for purposes of a claim for damages for infringement the patent still has legal force) and held therefore the other provisions of the Act relating to revocation and amendment continue to apply. In other words, Audiosport could amend their expired patent.

The case, arguably, would not have been necessary if a patent examination system was in place prior to grant. Whilst there are very good reasons why RSA must have a deposit system, the case does illustrate that amending patents can lead to delays and increased costs in enforcing a patent right in South Africa. Thus while the RSA patent system does not suffer the delay problems of the US system, it does somewhat defer issues to the enforcement stage. One way of avoiding this delay (if the patent is also applied for in the US or Europe) would be to amend a patent earlier taking the benefit of examination reports from those Registries and without the scrutiny of an alleged infringer's legal counsel.

Getting back to the CBS story, it is noteworthy that the USPTO recognises the direct correlation between its own delays, innovation and job creation. A reminder of just how important patent and trade mark offices are.

Friday, 20 August 2010

Two separate announcements highlight improvements in the intellectual property systems of Libya and Rwanda.

Libya’s new Trade Mark Rules

In addition, a resolution passed early last year in Libya has produced tangible results. The Ministerial Resolution No. 316 of May 2009 made some modifications to trademark registrations in the country. This month, the Libyan Trademark Office issued a registration certificate, the first in 30 years. More are expected to follow shortly as the Trademark Office process the large amount of applications received since the Resolution went into effect.

Soon, we will also be seeing the results of Libya’s new trademark law. Already ratified by Parliament, the new trademark law needs implementing regulations and publication in the Official Gazette before entering into effect. The new trademark law expands the scope of trademark protection in the country, lengthens grace periods, recognizes well-known marks and increases penalties for infringement.

Mohammed Ali provides more in-depth information of both points at Mondaq and Saba & Co outlines more changes in the new TM law here.

Rwanda’s Upgrades

WIPO Magazine has a very informative article about the many major changes that Rwanda has instituted in the past year or so. Here are a few highlights:

The reason behind these changes is very encouraging and refreshingly (at least not outwardly) driven by Western-world desires and policies. “It is [therefore] vital that Rwanda has a functioning intellectual property system, to allow people to realize the full value of their creations, and to allow them to access the creations of others.” Afro-Leo is especially excited to see recognition of the importance of access to the creations of others, something that’s far too often overlooked when discussing IP policies.

The Law on Intellectual Property covers patents, copyright, trademarks, geographical indicators, industrial designs, utility models and unfair competition. Laws covering the few missing topics, traditional knowledge and genetic research, are in the works. (It appears not to be available on-line yet. If anyone has a link, Afro-Leo would be very grateful.) There are also new laws in the business area to help build a nurturing atmosphere turning the protected innovation into development.

In addition to new laws, there are also new groups, including a new cross-media collecting society, the Rwanda Society of Authors, a private entity supported by the government.

Afro-Leo urges you to read the whole, well-written, article if you have a chance. (It’s not terribly long.)

Wednesday, 18 August 2010

Coded in Country. It’s a pretty catchy title and very interesting initiative starting to pick up steam across the continent. Started by private software consultancy Dimagi, Coded in Country aims to help increase the amount of high-quality software developed in Africa by Africans.

There are many talented coders in probably every country in Africa. (For two small examples, see Linux Uganda Group and Open Source Zambia.) Yet, as Neal Lash explains in “Beware the Foreign Expert”, a great deal of software designed for use by specific African communities is developed by coders from wealthy countries. Lash goes on to explain why this is a problem and how initiatives like Coded in Country can help.

Coding may seem a little removed from Afro-Leos normal roaring ground, but as IP attorneys and people involved with Intellectual Property around the continent, we probably all know a few young coders and software engineers who could use a little encouragement. These people will be a huge part of the future of their countries, and they will need legal help and guidance. Whether determining if they have complied with the requirements of the open source license on the software they just modified, or deciding if they can patent their new program, they will turn to us for guidance. It is worth looking into programs like Coded in Country, even if just to pass the information along.

First National Bank (FNB) has retained the naming rights to a number of stadiums including Soccer City (the stadium that hosted a number of the FIFA World Cup 2010 games including the opening and final game) after Stadium Management South Africa (who manage a number of stadia) had decided to ignore their contractual terms with FNB.

The High Court decision was widely reported in the press yesterday (see here, for example) and the contractual terms are displayed on FNB's website here. The case will come as a relief to all sponsors and especially those of stadia. Without a copy of the judgement or the arguments by SMSA it is difficult to comment but this looks like a case where the laws of contract have been upheld and that is a good thing for business .... and for all latin/english dictionaries who would be confused if "caveat subscriptor" did not mean "signor beware".

Wednesday, 11 August 2010

The South African daily newspaper, the Times, reports at http://www.timeslive.co.za/local/article595735.ece/SABC-owes-R28m-royalties that the public broadcaster, the South African Broadcasting Corporation (SABC), owes about R28 million in outstanding royalties for music videos that have been shown on its three channels. According to the report, the Recording Industry of South Africa (Risa) provided the SABC with over 12 000 music videos over the past four years, for which no payment has been received. Risa has now issued a high court summons for payment, and is also seeking to interdict the SABC from showing these videos until payment is resolved.While the facts are (obviously) in dispute, Risa alleges that the SABC last made a payment in 2005. The SABC defence appears to be that it was not party to agreements with Risa, and that its officers did not have the authority to enter into an extension of any agreement. It does not dispute the flighting of the relevant videos.While most of the comments on the Times story are unrepeatable, or unprintable, one person noted that it was ironic that the very entity that fought against music piracy was itself guilty. He or she should remember that, in terms of our Constitution, everyone is presumed innocent until proved otherwise!

Tuesday, 10 August 2010

Mr. Mayo Ayilaran of Nigeria was announced as the new Africa Region President for CISAC. Ayilaran has a long history in the collecting society arena and has served for years as the head of MCSN, the Musical Copyright Society of Nigeria. Full story from the Vanguard here.

Afro-Leo can’t help but wonder how this new development will affect the on-going collecting society saga in Nigeria. MCSN was a long-standing player in the Nigerian music industry, and many argue that it still is. However, as reported previously on this blog, the Nigerian Copyright Commission has approved a new collecting society, COSON, as the only collecting society allowed to operate in Nigeria.

Despite this announcement, MCSN has continued to represent its member artists and collect royalties, just as it did when there were no approved collecting societies in Nigeria. With Ayilaran’s transfer to the CISAC regional offices in Johannesburg, will MCSN continue moving forward? Will the bad blood between MCSN and COSON affect COSON’s ability to work internationally and obtain important reciprocal agreements with other collecting societies? Tuyakulanga, we will see.

Thursday, 5 August 2010

Afro Leo has received from Eliamani Laltaika (a former WIPO Indigenous IP Law Fellow) some exciting information about the recently-established Tanzania Intellectual Property Rights Network TIP-Net, which he coordinates.

TIP-Net has now launched the first issue of UBUNIFU (in Swahili, Tanzania's National language, this word means creativity or inventiveness). UBUNIFU -- which you can read here -- will appear quarterly. If you want further information or, better still, want to be involved with TIP-Net, you can email Eliamani here. TIP-Net's website, currently under construction, will be here. If anyone can accelerate this process, can they too get in touch with Eliamani.

In one of today’s IPKat postings (here), Jeremy Phillips mentions the dispute between the FBI and Wikipedia, over the use of the FBI seal. According to the post, US legislation provides that‘Whoever possesses any insignia...or any colorable imitation thereof ... shall be fined ... or imprisoned ... or both’ and Jeremy queries whether uploading onto a server can be viewed as possession – also, what other IP rights the FBI has recorded.

If that is overreach, obviously the latest notice in terms of section 15(1) of the South African Merchandise Marks Act 1941 (home of the famous ambush marketing provisions) has not come to his attention. General Notice 704 of 2010, in Government Gazette 33374 of 12th July 2010, prohibits the use of ‘words, devices, logos, pictures and drawings’ of all the stadia built for the FIFA Soccer World Cup 2010 ‘which might cause confusion with any trade, business, profession or occupation or event or in connection with a trade mark, mark or trade description applied to goods, save where the use thereof is by, or [with]sic the authority of the relevant Metro/ Municipality in which the above stadiums are situated’. The notice continues as follows: ‘The prohibition is absolute or sic perpetual’.

I have been forced to quote these provisions as it is impossible to provide and sensible paraphrase. Apart from the technical mistakes – the prohibition is issued in terms of s15(1)(a) of the Act , which merely prohibits use of the national flag or former national flags, rather than in terms of section 15(1)(b); and this latter section prohibits use of a ‘mark, word, letter or figure in connection with any trade…’, the prohibition is breathtakingly wide.

Fortunately road signs, if erected, are usually done so with municipal authority. But what about maps, and postcards? What about tours of the Cape, or any other area – may one not show tourists the edifices built with taxpayer money?

If this is the legacy of the ambush marketing provisions that allowed FIFA to enjoy such a profitable tournament, I dread what is coming next.

Wednesday, 4 August 2010

In Tsebo Health CC v Eternal City Trading 529 CC the Free State High Court based in Bloemfontein was called upon to decide whether the use of Ya Hlêkisa (and related get-up) in connection with a herbal cleansing agent amounted to passing off. Tsebo Health CC claimed that such use would lead to confusion as a result of the reputation it has in and to its herbal cleansing agent called Hleka. The judge held that passing off had been established and it is worth reading the judgement at para 14 to understand the reasoning.

The case is useful in a number of respects; in particular because it grapples with the protection afforded to descriptive markings (Hleka means "clean") in some but not all of South Africa's 11 official languages - how does RSA law deal with a situation where passing off could occur in some languages but not others?

The word Hleka means "clean" in Sotho, Setswana and Sepedi which is an inherently descriptive and weak mark for a cleansing agent in those languages with a poor ability to distinguish one cleansing agent from another. Nonetheless, the judge held that the mark was protectable, primarily, because in the other 8 national languages the mark would not readily be understood and because in some geographical areas Sotho, Setswana and Sepedi were not common.

Afro Leo senses a difficulty with this reasoning because it naturally discriminates against certain sectors of the community. He wonders whether the judgement should have reflected that the injunction was limited to areas where Sotho, Setswana and Sepedi were not common or otherwise reasoned that those speaking the other languages constituted a "substantial number of members of the public" to satisfy the test (although in the latter instance there would still be difficulties of discrimination and no evidence appears to have been led to assist with that reasoning)?

One wonders now too if Tsebo Health CC were to apply to register the trade mark "Hleka" for cleansing agents. The Registry would ask for its meaning and no doubt raise an objection that the mark is descriptive. In order to overcome that objection evidence would need to be lead that it had acquired a secondary meaning. In the present case the Judge accepted self serving evidence of reputation but would the Registry do that too, even if that evidence could not show that in Sotho, Setswana and Sepedi the mark had achieved a secondary meaning (which the evidence did not appear to show)? The distinction between acknowledging a secondary meaning under passing off and allowing a trade mark registration is that a trade mark registration would confer rights enforceable across the entire country whereas passing off rights could be limited to areas in which Sotho, Setswana and Sepedi were not spoken.

Despite the fact that RSA has always had numerous languages there are few trade mark cases that deal with how the courts treat them. This could be because English and Afrikaans have traditionally been the languages of formal trade. Things are changing: the Google search engine, for example, allows one to search in several other national languages thereby increasing the importance of local language search terms, the increase in spending power of those speaking other national languages, the elevation of those languages to national languages (since 1994 or so) and the relative size of the population who speak certain of the other national languages all raise the importance of a number of the national languages.

Perhaps it is no surprise then that this is the second case this year where confusion between languages has been considered - see, for example Chameleon Controversy. Afro Leo predicts a rise in filings for translations and local brands and would welcome commentary. Is the EU approach (see for example the Matratzen saga), for example, a useful guideline? Perhaps not.

Tuesday, 3 August 2010

A Queen Mary, University of London, LLM student has written to Afro Leo to invoke his aid. She wants to know

(i) are there any cases pertaining to copyright limitations and exceptions in Africa from courts in Africa? (she adds: "I assume there are, hopefully perhaps using the three step test to interpret the case") and if so,

(ii) what is (or are) the most reliable source(s) for such judgments on the internet, in libraries in London and/or commentaries and articles.

If you can make any helpful suggestions, please post them below or email her.

STOP PRESS: the damsel in question received so many good responses that Afro Leo has removed her email address to spare her any further leads ...

Monday, 2 August 2010

Christian Dudieu DJOMGA has asked me to publish this post on his behalf relating to IP rights in the song title "WAKA WAKA" which featured during the 2010 World Cup. Christian was involved in the case.

As the post is in French, readers are encouraged to use the translation feature on this blog, if French is not your mother tongue.